DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 1-24 remain pending and claims 1-19, and 22 have been amended. Applicant’s amendments to claims have overcome all previously held 101 rejections.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 6-13, and 14-15, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-12, and 14-15, respectively, of U.S. Patent No. US11927057B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are substantially similar, directed to a storage medium containing instructions to perform the identical method present within U.S. Patent No. US11927057B2. Although the referenced patent claim doesn’t mention a storage medium or control circuit, a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to store the instructions and utilize a control circuit, enabling the claimed method of controlling motorized control shades to be repeated (e.g. because of changes in glare condition or position).
Additionally, with respect to claim 6, of the examined claims, it uses the word “when” instead of the word “if” present in the near identical recitation of the claim limitation present in claim 5 of the reference patent. Although “When” and “if” carry different meanings in this context they represent an identical operation occurring due to an identical condition being observed and thus a person of ordinary skill in the art before the effective filing date of the claimed invention would have viewed these claims as obvious variations of each other.
With respect to claim 14, of the examined claims, it features two limitations both of which are separately identical to claims 13 and 14 found in the refence patent. Because claim 14 of the refence patent is depended on claim 13 and thus imports its limitations, claim 14, of the examined claims is rejected due to claim 14 of the refence patent.
Claims 1, 3, and 6 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 5, respectively, of U.S. Patent No. US10822873B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are substantially similar, directed to a storage medium containing instructions to perform the identical method present within U.S. Patent No. US10822873B2. Although the referenced patent claim doesn’t mention a storage medium, a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to store the instructions enabling the claimed method of controlling motorized control shades to be repeated (e.g. because of changes in glare condition or position) and although the examined claims do not explicitly mention non-warped images, it person of ordinary skill in the art, before the filing date of the claimed invention would have found non-warped images to be an obvious variation of images.
Response to Arguments
Applicant’s arguments, see applicant’s remarks, filed 03/31/2026, with respect to the 103 rejections of claims 1-24 have been fully considered and are persuasive.
With respect to page 10 of applicant’s remarks, applicant argues against the 103 rejections of claims 1-15, namely the combinations of Lundy, Stam, and Xiang, and Lundy, Stam, Xiang, and Johnson. The applicant specifically argues against Stam and Xiang.
With respect to Stam, the applicant argues that it is merely directed to an image array generating an output signal from each of the pixels one row at a time and that it doesn’t cure the rest of the deficiencies the applicant has identified in claim 1. The examiner disagrees with the first point due to Stam output signals being representative of the illumination of each pixel (“The output signal from each of the pixels is representative of the illumination sensed by each pixel.” Stam Paragraph 0141), however the examiner agrees with the applicant’s second argument in view of their arguments against Xiang. The applicant argues that Xiang does not teach the limitation of “…cease to process the at least one image upon the detection of the location of the glare condition to avoid determination of the respective luminance for remaining unprocessed pixels of the at least one image” (see claim 1), upon further consideration the examiner agrees and withdraws the associated rejection. Because claim 1 is no longer rejected, its dependents, claims 2-15 can no longer rejected, and accordingly those rejections are also withdrawn.
With respect to pages 11-12 of applicant’s remarks, the applicant argues the 103 rejections of claims 16-24 namely, the combination of Lundy, Xiang, Johnson, and Ackermann. The applicant specifically argues against Ackermann. With regards to Ackermann, the applicant argues that it does not teach the claim limitation of “detecting the location of the glare condition when a ratio of the luminance of a second pixel to the background luminance is greater than a predetermined threshold” (see independent claims 16, 19, and 22), that its teachings are substantially different from that of the claimed invention, and that it cannot cure any further deficiencies identified by the applicant in claims 16, 19, and 22. Upon further consideration the examiner agrees and recognizes the prior reliance on Ackermann was done due to a misinterpretation of the reference, particularly a confusion regarding the substantive difference between glare and the stripes create by blinds and light that Ackermann is ultimately directed to. Accordingly, the examiner is also persuaded that Ackermann cannot cure any other deficiencies present in claims 16, 19, and 22 and thus withdraws the previous claim rejections for claims 16, 19, and 22. Because the independent claims 16, 19, and 22 are no longer rejected, their dependent claims 18, 20-21, and 23-34 can longer be rejected and accordingly those rejections have also been withdrawn.
Allowable Subject Matter
Claim 1-24, have been found to be allowable over prior art, however there are still some outstanding issues (see above double patenting section) for claims 1, 3, and 6-15.
Additionally, claims 2, 4, and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: In consideration of the interview and in response to applicants arguments, the examiner was persuaded especially in regards to the lack of teaching of “ceasing to process the at least one image upon the detection of the location of the glare condition to avoid determination of the respective luminance for remaining unprocessed pixels of the at least one image” in independent claim 1 and claims 18, and 24. Upon further search and consideration this limitation could not be found. Additionally, the examiner agrees with the applicant’s interpretation of Ackermann and upon further search and consideration of the limitation “detecting the location of the glare condition when a ratio of the luminance of a second pixel to the background luminance is greater than a predetermined threshold” of independent claims 16 19, and 22 could not be found.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA C WILLIAMS whose telephone number is (571)272-7074. The examiner can normally be reached M-F 7:30am - 4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew W Bee can be reached at (571)270-5183. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA COLETTE WILLIAMS/Examiner, Art Unit 2677
/ATIBA O FITZPATRICK/Primary Examiner, Art Unit 2677
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